Appendix — Sears v. Dann

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APPENDIX A

DECISION BY THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

ALEXANDRIA DIVISION

November 14, 1975

“THE COURT: ...I don’t think I have jurisdiction;

I think it’s improperly filed. I'll dismiss it for that

reason.”

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UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

73-1699

MARY HELEN SEARS,

Appellant,

vs.

ROBERT GOTTSCHALK, Commissioner of Patents,

Appellees.

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA, AT ALEXANDRIA.

Upon consideration of the plaintiff’s motion to permit

the district court to consider a motion pursuant to rule

60(b) (6), by counsel,

IT IS ORDERED that the motion is denied.

For the Court—by Direction

/s/ WILLIAM K. SLATE, II

Clerk

Filed: December 15, 1975

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EXHIBIT A

LEE PHARMACEUTICALS

1444 Santa Anita Ave., P.O. Box 3836

South El] Monte, Calif. 91733

(2138) 442-3141

September 9, 1975

HL 75-441

Mr. Joseph Nakamura

Solicitor, United States Patent Office

Washington, D.C. 20230

Dear Mr. Nakamura:

I am writing you as President of Lee Pharmaceuticals

and a named inventor on many of its patents and patent

applications, to express my dismay that abandoned

patent applications in the Patent Office files are not

publicly available to be searched before a patent applica-

tion is filed and are not used in examining patent ap-

plications after they are filed. This is particularly diffi-

cult for me to rationalize with what I understand to be

the fact that such abandoned applications are considered

by the courts as evidence that may invalidate an issued

patent. In this connection, I have noted the recent use

of non-public evidence to invalidate patents in Del Mar

Engineering Laboratories vs United States 186 USPQ

42 (Ct. Cls. 1975) and in Becton, Dickinson & Co. vs

Sherwood Medical Industries, Inc., No. 72-3599 decided

by the Fifth Circuit Court of Appeals July 28, 1975.

At present, my company has a unique commercial

product constituting a carvable dental composite restora-

tive material covered by Application Serial No. 504,838.

I am writing this letter to request that the Patent Office

search for and make available to my company under

5 U.S.C. 552(a) (3) those abandoned patent applications

that may be in any way germane, based on their subject

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matter, to the patentability under any section of the

patent statutes of the claims of Application Serial No.

504,888—and that those claims be evaluated relative

to all abandoned patent applications so located.

I look forward to your prompt response.

Very truly yours,

/s/ Henry Lee

HENRY LEE, Ph.D.

President

HL:lm

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EXHIBIT B

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U.S. DEPARTMENT OF COMMERCE

PATENT OFFICE

Address Only: COMMISSIONER OF PATENTS

Washington, D.C. 20231

September 30, 1975

Dr. Henry Lee

President, Lee Pharmaceuticals

1444 Santa Anita Avenue

P.O. Box 3836

South El Monte, Calif. 91733

Dear Mr. Lee:

This is in response to your letter of September 9, 1975,

received on September 16, 1975, requesting that the

Patent and Trademark Office search for and make

available to your company under 5 USC 552(a) (3), those

abandoned applications that may be germane to the

patentability of claims in application Serial No. 504,838.

I regret that your request must be denied. There are

literally hundreds of thousands of abandoned patent

applications in the Patent and Trademark Office. An

unreasonable amount of effort would be involved in locat-

ing any which might be germane to the patentability

of claims in application Serial No. 504,838. And even

if any were located, we would be prohibited by statute,

35 USC 122, from making them available to your com-

pany. The noted statute specifies that “|a]pplications

for patents shall be kept in confidence by the Patent

Office * * *.” 35 USC 122. Abandoned applications, ac-

cordingly, are exempt from disclosure. 5 USC 552 (b) (3).

You also request an evaluation of the claims in applica-

tion Serial No, 504,838, relative to all abandoned patent

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applications located. This request is likewise denied since

5 USC 552(a) (3) applies only to existing records and

does not require an agency to create a record.

Should you desire to do so, you may submit a written

appeal from this decision within 30 calendar days after

the date of this letter. The appeal shall include a copy

of your original request, a copy of this letter and a

statement of the reasons why you believe this denia!

is in error. The appeal should be addressed to The

Commissioner of Patents and Trademarks, Freedom of

Information Request Control Desk, Box 50, Washington,

D.C. 20231.

Sincerely,

/s/ Joseph F. Nakamura

JOSEPH F. NAKAMURA

Solicitor

ec: Asst. Gen. Counsel for Admin.

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EXHIBIT C

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LEE PHARMACEUTIALS

1444 Santa Anita Ave., P.O. Box 3836

South E] Monte, California 91733 U.S.A.

Tel. (212) 442-841 WATS: (800) 423-4173

TWX: (910) 587-3420

October 29, 1975

Mr. Joseph Nakamura

Solicitor, United States Patent Office

Washington, D.C. 20230

Dear Mr. Nakamura:

This a written appeal from the decision which appears

in the September 30, 1975 letter signed by Joseph F.

Nakamura, Solicitor. A copy of my original request

dated September 16, 1975 and of Mr. Nakamura’s Sep-

tember 30, 1975 letter are enclosed.

The reasons why I believe Mr. Nakamura’s denial of

my request is in error include the following:

1. As my original request points out non-public

evidence, including abandoned patent applications,

are considered by the courts as evidence that may

invalidate patents for failure to measure up to the

constitutional patentability standard as embodied, for

example, in 35 U.S.C. 108. Mr. Nakamura does not

suggest otherwise.

2. 35 U.S.C. 6 provides that the Commissioner .. .

shall superintend or perform all duties required by

law respecting the granting and issuing of patents”.

As a part of his duties the Commissioner is re-

quired to “cause an examination to be made” of each

application for patents and of “the alleged new

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invention” contained therein and to issue a patent

on such applications only “if on such examination

it appears that the applicant is entitled to a patent

under the law” 35 U.S.C. 131.

8. To determine whether the “applicant is entitled

to a patent under the law” it is necessary for the

Commissioner to consider the evidence germane to

that issue which is contained in abandoned patent

applications.

My request that the Commissioner discharge that

duty as to my company’s application 504,838—a

duty which is imposed by the patent statutes—is

not rationally denied by Mr. Nakamura’s observation

that “5 U.S.C. 552(a) (3) ... does not require an

agency to create a record”’.*

4, Since, as demonstrated by paragraphs 2 and 83,

availability and consideration of abandoned applica-

tions is “necessary to carry out the provisions of

: “an Act of Congress” such records are excluded from

the confidence provisions of § 122—and are expressly

subject to the non discretionary disclosure portions

: of that statute.

.

5. Mr. Nakamura’s conclusion that under 35 U.S.C.

122 and 5 U.S.C. (b)(3) abandoned applications

are “exempt from disclosure” conflicts squarely with

Administrator, F.A.A. Vv. Butterfield 422 U.S. 255,

45 L.Ed. 2d 165 (1975).

As explained in that decision, “all parts of an

act... are to be given effect” and “repeals by

implication” are not favored. Statutes capable of

coexistence are to be construed to give effect to both

* Notably my request was that abandoned applications which are

“germane” be considered in connection with my application Serial

No, 504,838—just as all other germane references are considered,

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or all. Both the FOIA and § 122 have disclosure and

nondisclosure aspects. Both aspects of both acts can

and should be given effect.

The disclosure aspect of § 122 is concerned with those

applications “necessary to carry out the provisions of

any Act of Congress”. The applications in this cate-

gory are expressly excluded from its “confidence pro-

visions” by §122’s own terms. “The wisdom of the

balance struck by Congress is not open to judicial

scrutiny.” Robertson, supra, 45 L. Ed. 2d at 174.

Very truly yours,

/s/ Henry Lee

HENRY LEE, Ph.D.

President

HL/rew

enclosures

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EXHIBIT D

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UNITED STATES DEPARTMENT OF COMMERCE

PATENT AND TRADEMARK OFFICE

Address Only: COMMISSIONER OF PATENTS AND

TRADEMARKS

Washington, D.C. 20231

December 1, 1975

Dr. Henry Lee

President, Lee Pharmaceuticals

1444 Santa Anita Avenue

P.O. Box 3836

South El Monte, California 91733

Re: Appeal from initial decision

denying a request under the

Freedom of Information Act

Dear Dr. Lee:

This is in response to your letter of October 29, 1975,

appealing from the denial of your request to have the

Patent and Trademark Office search for and make avail-

able to your company under the Freedom of Information

Act, 5 USC 552, those abandoned patent applications

that may in any way be germane to patentability of the

claims in your pending patent application. You had also

requested, and been denied, an evaluation of the claims

in the light of all abandoned applications so located.

I have reviewed the reasons why you believe the denial

of your request was in error but am not convinced that

the denial was wrong.

Congress has directed that “|{alpplications for patent

shall be kept in confidence by the Patent [and Trade-

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mark| Office and no information concerning the same

given without authority of the applicant or owner * * *.”

385 USC 122. The U.S. District Court for the Eastern

District of Virginia has held in Sears v. Gottschalk,

357 F. Supp. 1327, that abandoned patent applications

are barred from disclosure by 35 USC 122, and there-

fore specifically exempted by statute from disclosure un-

der the Freedom of Information Act, as provided in 5

USC 552(b) (8). The Court’s decision was affirmed by

the U.S. Court of Appeals for the Fourth Circuit (502

F.2d 122). Certiorari was denied by the Supreme Court

on June 30 of this year (sub nom Sears v. Dann) and

rehearing was denied on October 6.

I cannot agree with your contention that my duty to

“cause an examination to be made” of patent applica-

tions (85 USC 1381) requires me to consider abandoned

patent applications as references . The same contention

was made, and rejected by the Court, in Sears v. Gotts-

chalk, supra.

The two cases cited in your original request (Del Mar

Engineering Laboratories vy. United States, 186 USPQ

42 (Ct. Cls. 1975), and Becton, Dickinson v. Sherwood,

187 USPQ 200 (5th Cir. 1975)) did not involve the use

of abandoned patent applications as references.

I cannot agree with your view that the exemption of

abandoned applications from disclosure conflicts with the

Supreme Court’s decision in Administrator, FAA Vv.

Robertson, 422 U.S. 255, 95 S. Ct. 2140. The same con-

tention was recently made by the plaintiff in the Sears

case and rejected by the Court in denying the plaintiff's

motion under Rule 60(b), FRCP, for relief from judg-

ment (E.D, Va., November 14, 1975).

Finally, your request that an evaluation of the claims

in your pending application be made is a request to

have a record (evaluation) made. The Freedom of In-

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formation Act does not require agencies to create a

record, and your request was, therefore, properly denied.

I am, therefore, finally denying your Freedom of In-

formation Act request on the ground that the requested

records fall within the (b)(3) exemption of the Act

| and the requested evaluation is not within the scope of

the Act. This is a final decision for the Department of

: Commerce from which you have a right of judicial review

as specified in 5 USC 552(a) (4) (B).

Sincerely,

/s/ C. Marshall Dann

C. MARSHALL DANN

Commissioner of Patents and Trademarks

F ec: Special Asst. to the Secretary

q for Public Affairs

i Asst. Secretary for Administration

Asst. General Counsel for Administration

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